1.5 Basic Tech Triage: Assessing and Selecting Disclosures

1.5.1 Why Tech Triage is Important

One of the most important steps in the overall process of successfully commercializing inventions and discoveries is technology triage. Triage means careful selection based on certain criteria. Many inventions will never be successfully commercialized because they lack key elements. Effective triage by the TTP allows the TTO to work on those inventions which have potential for success. Without effective triage, the TTP will pursue efforts that will never yield positive results. This is a waste of the precious time of the TTP and TTO. It is essential for long-term, sustainable success of the TTO that TTPs conduct triage and select only those inventions with potential for success. Effective, well-reasoned triage is also important for inventors.  Early identification of a fatal flaw will save their valuable time and effort and will encourage them to return to the TTO with their next big idea, knowing it will get a thoughtful reception. This does not mean that the TTO will not take on risky technologies – far from it. The selection is based on whether the technology has enough of these essential elements: some type of performance advantage or superiority compared to existing technology; inventiveness and some potential for patentability or other form of suitable IP; relevance to some market application; economic justification for the technology in a market application; and the potential for developing a suitable “value proposition.” 

1.5.2 The Hypothetical Product: Understanding Market/Economic Relevance

To select inventions for commercialization, the TTP usually does an assessment of the invention where they envision possible products and/or services from the invention. While the invention may turn out to have more than one application, imagining an initial hypothetical product or service is an important assessment tool. Often working with the inventor, the TTP asks basic questions such as: Who will buy this? Why will they buy it? How much will they pay? Of course, some inventions do not easily lend themselves to being a definable product, but rather a means of making processes more profitable through cost reduction, etc. In such cases, the TTP will dig deeper into to envision potential commercial applications of the invention.

1.5.3 Understanding “Inventiveness”/“Non-Obviousness”

“Inventiveness” (in the United States, that criterion is “non-obviousness”) may be the single-most important word in the TTPs glossary. Inventive is not only essential for patentability, but also the link between the technical uniqueness of an invention and its performance advantages over existing technology. Inventiveness is composed of two components: 1) uniqueness (compared to the “prior art”) and 2) the aspect(s) of that uniqueness give some advantage over existing technology. Determining the inventiveness of an invention is crucial for patentability assessment, and as the first step in developing the value proposition of the technology in one or more applications.

1.5.4 Defining, Finding and Interpreting Prior Art

Inventions are only inventive and valuable when they are compared to existing technology. Certainly, some inventions are so ground-breaking and paradigm-shifting that there is really nothing to compare them to. However, most inventions evolve from previous technical solutions. All these technical solutions are embodied in the “prior art.” In the IP world, prior art is all published patents, patent applications, and technical literature that is similar in some way to the invention. While initial prior art searches are done using internet-based databases, extremely thorough searches, and searches for potentially valuable inventions, usually require professional prior art searches.

Whether the prior art search is done by a professional searcher, the inventor and or the TTP, the goal is to identify those patents/applications and/or technical literature that are AS SIMILAR AS POSSIBLE to the invention. Then, the TTP carefully compares the inventive features of the invention to the prior art to determine EXACTLY what the differences are; and decides if the differences are meaningful from a technical performance standpoint. This process not only assesses the inventiveness (and patentability scope) of the invention but also often triggers an evolution in the nature of that inventiveness from initial invention and disclosure through prior art analysis. 

1.5.5 The Triple Convergence: Technical Performance, Inventiveness and Market Relevance

In determining the value of an invention, the TTP must assess inventiveness, patentability scope, and market relevance. With the prior art in front of them, the TTP assesses the precise nature of inventiveness of the invention. This requires an understanding of whether a unique aspect of the invention (compared to the prior art) gives it some technical advantage(s). Then, the TTP determines how those advantages may have marketable applications. At the same time, the TTP can begin to understand what potential scope of patent claims are possible. At this stage of analysis, the TTP can determine if the inventiveness, scope of patentability and market relevance will lead to commercialization success, and/or how feasible it will be to protect, license and commercialize the invention. 

1.5.6 The IP “Suite,” Patents, Other IP, Bioproperty: What’s Feasible?

An invention, protectable by patent or other form of IP, is often part of a larger “technology.” The invention and the larger technology can often be protected by several different types of IP, which can include a patent, trade secret, copyright, trademark, etc. and any combination of these IP. For example, an invention may be protectable by both a patent and a trade secret. This combination is the “suite” of IP which protects the invention and/or technology with various IP mechanisms. A creative and experienced TTP customizes an appropriate IP suite for a particular invention/technology.

However, IP suites can be expensive, so the TTP must carefully determine the optimal IP suite types from various standpoints. First, the TTP determines what type(s) of IP and/or Bioproperty (see Topic 7: Intro to IP Management, Section 1.7.6) is possible; from this the TTP determines what types of property is feasible and cost-effective. Crafting the most cost-effective IP suite is the mark of the experienced TTP.

1.5.7 Identifying Potential Applications, Market Relevance and the Value Proposition

The procedure for identifying potential applications, market relevance, and the value proposition is similar to, and builds on, the “hypothetical product” approach described in Topic 5: Using a Business Model Canvas as Part of Business Development & Marketing/Licensing, Section 2.5.2. However, in this method, the TTP considers all the potential applications of the invention. From this list, the TTP then assesses market relevance and economic justification. From that assessment, the TTP prioritizes the applications from highest-to-lowest in terms of relevance and economics. The TTP then crafts a value proposition of the highest-ranked potential applications. 

We recommend that the TTP develop a value proposition for each invention selected for development. Such value propositions can take considerable amount of time to research and craft – they are often a “work in progress” and improved over time. The basic value proposition statement can be summarized as: Value = Benefits – Cost.

1.5.8 Finding the “Triple Convergence”

The “triple convergence” refers to the overlapping of three distinct areas relevant to the overall quality of an invention. Those domains are inventiveness and technical performance; IP quality; and market relevance. The TTP must identify the invention’s characteristics in each of these domains, and then carefully examine their overlap. The TTP uses this overlap zone as the guiding principle for creating and implementing a commercialization strategy and plan. 

1.5.9 Managing “Platform Technologies” for Different Applications and Markets

Some inventions have one application, and one application only. For example, a cure for cancer is good for that one application – and likely nothing more. Managing an invention with one application is straightforward in developing a commercialization strategy – although it has its own set of challenges, of course. However, some inventions are fundamental enough to have more than one application – on some occasions, an invention may have numerous, and quite different, potential applications. Such multi-application inventions are called “platform technologies.” Managing such platforms is both exciting and challenging – exciting because of the variety of industries, products, and companies that are potential fits for the invention, but also challenging to manage so many possibilities. But, most importantly, a platform technology has significant potential for success because there are so many different choices and chances – this basically increases the technology’s chance of commercial success. For example, if the TTP licenses a platform technology to a company in the automotive field and to another in the construction field, they have increased the chances for eventual technology success. 

1.5.10 Philanthropic and Humanitarian Concerns, and Other Selection Factors

There is a very natural tendency to focus on the potential commercial value of an invention. Frankly, most inventions will be successfully developed, implemented and commercialized to generate profits and license revenue solely because they are valuable from a profitability perspective. However, some inventions have very significant humanitarian or philanthropic value, regardless of whether they will ever generate a profit. For example, an invention that allows the detection and neutralizing of landmines after a conflict has a human-safety value that is incalculable. Similarly, certain medical inventions have so much humanitarian value the profitability is relatively superfluous. For example, an invention that allows a surgeon to detach conjoined twins should not be evaluated in terms of its potential to generate profits but rather to reduce human suffering. The ethically minded TTP should always remember that a technology they are responsible for may have a significant humanitarian/philanthropic quality. While any TTP should bring such an invention to fruition to benefit humanity, this is particularly true of TTPs in PSRIs. The mission and reputation of a PSRI are well-served when the TTO is seen as a key driver in bringing such humanitarian/philanthropic inventions to society. The TTP/TTO should always remind senior institutional leadership and other university personnel that it is essential to maintain a balance between profits, commercialization, license revenue, and the public good served by a humanitarian/philanthropic mindset.